Filing an International Trademark Registration – The Madrid Protocol

As businesses become more dynamic and competitive, it is essential to protect your brand’s identity by effectively registering your trademark, which aims to safeguard your business’s intellectual property, retain a competitive edge in the market, and distinguish you in the business landscape. For businesses operating in more than one country, adopting a International trademark registration system that allows trademark owners to secure their mark in multiple countries through a single registration provides an efficient and convenient solution for trademark protection.  

The Madrid System for the International Registration of Marks  

An international framework administered by the World Intellectual Property Organisation (WIPO), the Madrid System for the International Registration of Marks, is a convenient and cost-effective solution for businesses to register and manage their trademarks worldwide. Adopted in the year 1996, the Madrid System has been developed based on two international treaties –  

• The Madrid Agreement – Concluded in 1891 and further revised in the following years, the Madrid Agreement was amended in 1979. 

• The Madrid Protocol – Concluded in 1989, the protocol was introduced to make the system more flexible and align with the domestic legislation of countries across the globe, especially the ones that had not been able to accede to the Agreement.  

An applicant files one international application (in English, French, or Spanish) with their national/regional IP Office (also called the “Office of Origin”) or directly with WIPO. They pay one set of fees (comprising basic, complementary, and supplementary fees) in one currency (Swiss francs). This eliminates the need for multiple filings, translations, and currency exchanges for each target country initially.  

All subsequent modifications (including changes in name/address, limitations of goods/services), renewals (every 10 years), and requests for territorial extension to additional member states are handled through a single procedural step with WIPO. This provides significant administrative simplicity for managing a global portfolio.  

After the initial registration, protection can be extended to other Madrid System members (“Contracting Parties”) through a simple request to WIPO (a “subsequent designation”), without needing to go through the entire initial application process again for each new country. 

The United Arab Emirates (UAE) and the Madrid Union– The United Arab Emirates (UAE) became a signatory to the Madrid Protocol in 2021, becoming the 109th country globally and the 3^rd GCC nation to join. This service enables holders registered with the UAE Ministry to request the registration of the international trademark under the Madrid Protocol.  

UAE-based trademark holders, using the UAE Trademark Office as their Office of Origin, gained a streamlined tool to seek trademark protection internationally in over 130 territories through one application, in Arabic, filed with their local ministry. This significantly reduces cost and complexity for UAE companies expanding globally. Foreign companies using the Madrid System can now easily designate the UAE in their international applications. 

What is the Procedure for Filing International Trademark Applications Under the Madrid System?  

The Madrid System offers applicants three primary methods to file an international trademark application. Applicants (or their authorized representatives, such as trademark agents or lawyers) can file using WIPO’s online portal, eMadrid. During the filing process, the applicant must select their “Office of Origin” (their national/regional IP office where they have a basic application or registration). The system will then indicate the available filing options based on the chosen Office of Origin.  

Filing Methods: 

1. Madrid e-Filing: This is WIPO’s fully electronic filing portal accessible through eMadrid. Applicants (or their representatives) can directly complete, submit, and pay for their international application online to WIPO. This portal also allows users to communicate electronically with WIPO and their Office of Origin, and to receive and respond to WIPO notifications. Note: While many Offices of Origin are connected, filing via Madrid e-Filing is done directly on WIPO’s platform. 

2. IP Office Online Filing – Some national or regional IP Offices (Offices of Origin) offer their own integrated online platforms for submitting international applications under the Madrid System. Applicants use their Office of Origin’s specific system to prepare and file the international application electronically. That Office then certifies and forwards it to WIPO. 

3. Madrid System Application Assistant (Form Preparation Tool): Applicants can use WIPO’s “Application Assistant” tool to fill out the international application form (MM2) interactively online. The completed form is downloaded in PDF format. The applicant (or their representative) must then submit this PDF form to their Office of Origin (not directly to WIPO) according to that Office’s procedures (which may involve paper submission, the Office’s own online system, or email). The Office of Origin certifies the application based on the basic mark and forwards it to WIPO.  

The Process of Registration –  

Registering your business trademark internationally under the Madrid System involves various steps: 

• Trademark Search – Conducting a trademark search for identical or similar marks before choosing and registering your brand’s mark as a proactive step can aid in locating conflicting brands and avoid potential legal complications, thereby ensuring a smooth registration process and safeguarding your brand’s future.  

• Pre-requisite of Basic Application – For filing an international trademark application under the Madrid System, the applicant from within the country shall have completed a local trademark application or registration in the home country as a basic application.  

• Filing International Application – The application is filed via the WIPO by using any one of the aforementioned filing methods. In the UAE, the users may file by: 
  – UAE Trademark Office website, the parties shall avail the WIPO Madrid e-filing provision.  
  – Under such external e-filing website, the party may choose their respective service from the list of services provided. 
  – Thereby, the party may fill in and submit the application data. 
  *It is always recommended to file an application through a registered trademark agent. 
  
• Classification of Goods and Services – While applying, the applicant shall classify their product under the goods and services. This can be done by employing the “Goods and Services Manager” tool in the WIPO’s eMadrid platform. The platform shall also guide the applicant with the necessary guidelines. 

• Choose the Countries Where Your Trademark is to be Protected – The applicant, while filling the application, shall select all the member countries where they intend for trademark protection. They shall ensure that they choose at least one foreign member country (other than their home country). 

• Checking all Details – While filling the application, the applicant shall ensure the details such as the name, address, email, etc., from the original trademark and basic application. 

•  Payment of the Prescribed Fees – The applicant shall be required to pay a basic fee and additional fees in Swiss Francs (CHF) via the WIPO. Generally, the basic fee depends on whether your trademark is in black and white or color. The additional fees are calculated based on factors such as the number of countries where the applicant wishes to extend their trademark protection, the type of trademark, the number of classes of goods and services, and so on. The payment of fees is a crucial step in processing your application.  

• Examination of Application – The application shall be examined by the WIPO to confirm the mark’s compliance with the Madrid System. An examination shall also be undertaken by all the countries selected for trademark protection by the applicant. This ensures that the mark does not conflict with an existing trademark in their jurisdiction. 

• Notification of Application Status – After the examination process, the WIPO shall inform the applicant of the decision of each country. Compliant marks shall be recorded in the International Register and further shall be published in the WIPO Gazette of International Marks. 

Tracking Your Trademark Application:  

After filing, the applicant may track the application by: 

• Use “Monitor your Registration” on the eMadrid Platform, which can be accessed with your International Registration (IR) Number.  

• The applicant can also check the protection status in each designated country by viewing the “Designation Status”. 

An average duration of 12 to 18 months from the date of receiving the application by the designated countries shall be taken for the service delivery. Moreover, for the continued and exclusive use of your trademark with legal protection, timely renewal (renewed every 10 years from the filing date) through the WIPO is necessary.  

Advantages of Filing International Trademark Applications Under the Madrid System 

The Madrid System offers a centralized, streamlined, and cost-effective solution for businesses seeking trademark protection in multiple countries. Its core advantages are: 

• Single Application: File one application with one office (your “Office of Origin”) to seek protection in multiple member states (currently over 130), thereby eliminating the need for separate initial filings in each target country. 

• Convenient to Use: Filing with a single international trademark application helps you manage your international trademark portfolio centrally and digitally through the WIPO and expand protection of your business into new markets quickly and easily. 

• Feasibility – The system eliminates the necessity of filing a bundle of national or regional trademark applications, payment for translations, and the requirement to hire a representative in each country. 

Conclusion: 

The UAE’s accession in 2021 unlocks these Madrid System advantages specifically for UAE-based businesses: 

• Global Reach from UAE: UAE trademark holders can use their UAE registration/application as the “basic mark” to efficiently secure protection in over 130 markets via a single application filed with the UAE Trademark Office (acting as the Office of Origin). 

• Attracting Global Brands: Simplifies the process for international brands entering the UAE market via the Madrid System. 

• Competitive Edge: Provides UAE SMEs and multinationals with a cost-effective tool to build and manage global brand protection, crucial in the UAE’s dynamic, trade-oriented economy. 

In essence, the Madrid System provides the infrastructure for efficient international trademark management, while trademark experts provide the essential strategic and legal navigation to maximize its benefits and mitigate risks, especially in complex markets. The complex and cumbersome processes of registration can be easily navigated with the help of a trademark expert or legal professional, ensuring a correct, timely, and efficient approach.